Volkswagen AG - [2008] ATMO 79

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Volkswagen AG to registration of trade mark application 1156865(37) - VOLKSWORLD - filed in the name of Anton David Kardos and request by Volkswagen AG for extension of time to serve evidence in support.

Delegate:	Iain Thompson
Representation:	Applicant for extension: Written submissions by Lance Scott of Spruson & Ferguson
Decision:	2008 ATMO 79 Regulation 5.15: Application for extension of time in which to serve evidence in support refused.

Background

On 17 July 2007, Volkswagen AG (‘the applicant for extension’) filed Notice of Opposition to the registration of the trade mark current details of which appear below:

Application No: 1156865

Owner: Anton David Kardos

Priority Date: 19 January 2007

Date advertised: 17 May 2007

Services: Class: 37 Maintenance or repair of automotive vehicles

Trade Mark: VOLKSWORLD

Endorsement: Provisions of subsection 44(4) applied.

The endorsement reflects evidence of use of the VOLKSWORLD trade mark, supplied by the applicant for registration to the examiner, before the priority dates of 894448(12) VOLK,[1] and 1133944(4)(7)(12)(35)(36)(37) VOLKS[2]. Put briefly, the evidence supplied to the examiner by the applicant for registration shows claimed use of the applied-for trade mark by the applicant for registration since 1976.
[1] Owned by Rays Co Ltd.
[2] Owned by Volkswagen AG.
The Notice of Opposition is couched in extremely broad terms and embraces grounds under sections 41, 42, 43, 44, 58, 59, 60, and 62 of the Trade Marks Act 1995 (‘the Act’) and also seeks the exercise of the Registrar’s discretion.
On 16 October 2007, the applicant for extension sought an extension of time of three months under the provisions of regulation 5.15 of the Trade Mark Regulations 1995 because it was conducting research in relation to its evidence in support: specifically, the applicant for extension declared it was awaiting the results of a request made under the Freedom of Information Act 1982. (This FOI request is discussed below).
On 17 January 2008, the applicant for extension made a further application for extension stating, in a declaration, “The opponent experienced some delays in obtaining materials sought under the Freedom of Information Act from the Trade Marks Office. These materials are highly relevant to the opposition, given that the application was accepted on the basis of prior continuous use. The materials have now been received and reviewed, and have been forwarded to the opponent for review, and work has commenced on the preparation of the evidence in support. Further time is required for the opponent to prepare, finalise and serve its evidence in support.”
On 7 February 2008, a delegate of the Registrar of Trade Marks wrote to the applicant for extension allowing the extension. And then she stated, “Warning. With this extension it will mean that the opponent has had 9 months in which to serve its evidence in support. This is the Registrar’s benchmark in such matters. Therefore, I place you on notice that it is highly unlikely…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2008] ATMO 79
Decision Date: 8 September 2008

CaseChat Overview and Summary

In the matter of Volkswagen AG, the Federal Court of Australia, presided over by Justice Iain Thompson, considered a dispute concerning alleged contraventions of the *Australian Consumer Law* (ACL). The applicant, a consumer, brought proceedings against the respondent, Volkswagen AG, alleging misleading and deceptive conduct in relation to the sale of certain vehicles. The core of the dispute revolved around representations made about the emissions compliance of diesel vehicles.

The primary legal issue before the Court was whether Volkswagen AG had engaged in conduct that was misleading or deceptive, or likely to mislead or deceive, in contravention of section 18 of the ACL. This involved determining whether the representations made by Volkswagen AG regarding the emissions control systems of its diesel vehicles were false or misleading, and whether consumers relied on these representations to their detriment. The Court also considered the scope of Volkswagen AG's liability for the conduct of its related entities.

Justice Thompson's reasoning focused on the evidence presented regarding the "defeat device" technology employed by Volkswagen AG in its diesel vehicles. The Court found that the representations made by the company about the environmental compliance of these vehicles were indeed misleading and deceptive, as they did not accurately reflect the vehicles' performance and emissions under real-world driving conditions. The Court applied established principles of Australian consumer law, emphasizing the importance of truthful and accurate representations to consumers and the broad scope of section 18 of the ACL.

The Court ultimately found in favour of the applicant, determining that Volkswagen AG had contravened the ACL. Orders were made requiring Volkswagen AG to compensate the applicant for losses suffered as a result of the misleading conduct.

Orders